Presentation made on August 13, 2009 in Nairobi Kenya. Sponsored by the Institute of Economic Affairs, this presentation highlights the improtant of engaging in technology transfer to being the results of publicly-funded research into actual use. Tips and traps of the process were highlighted.

1. IPR Awareness Seminar – The Need for Technology Transfer Expertise Marcel D. Mongeon Intellectual Property Coach

2. Outline Defining Technology Transfer How TT Occurs in North America Financial expectations and Reality The need for national frameworks Policies and practices Setting up TTOs Q&A and discussions

3. What is Technology Transfer? My preferred definition: Any means used to have research results and academic knowledge put into practical use The need for a ‘user’ or ‘customer’ Some confusion between input measures and outcomes Patent filings Revenue

4. Marcel’s Laws Patents ≠ Success Customers = Success Patents = Bait

5. How TT Occurs in North America Source: Berneman, Start UP Business Development, AUTM Annual Meeting 2008 ED9

6. But, What is Missing? Types of Technology Transfer: Licensing of IP Collaborative Research Sponsored Research Use of Equipment and Facilities Training of HQP Which is most important? Least?

7. Financial Expectations and Reality McMaster University FY97 to FY06, Net Revenues/Disclosure over Disclosures, Max revenue=100

8. So, Why Do We Do It?

9. National Frameworks United States: Bayh-Dole Act Canadian and various European Countries South African IPR Law Question: Does Kenya need a national framework? Will only be successful if funding for infrastructure

10. Creating and Implementing New Policies What should an institutional policy touch on? How to decide these issues? How to implement?

11. Topics for an IP Policy IP that is included Who is covered Ownership of IP Disclosures Dispute resolution Protection of certain communities/Conflicts Responsibility for Management Splitting the money

12. What IP is Included Traditional division between Copyrights and Patents Ignoring of Trade-marks Good arguments to be made now that all IP should be brought into a policy Who decides when IP will be commercialized? (Researcher, funder, administration?)

13. Who is Covered Researchers Students Staff members How about visitors? Members of the local community allowed to use facilities? How to reconcile issues over collaborating partners?

14. Ownership of IP Clear statement that IP is owned by X [Inventors; Funding Organization; Institution?] Choice should be based on: who is best capable of doing the work? Obligations to sign patent documents Need for institutional and individual signatures Consider ‘relief valve’ that lets researchers get ownership back

15. Alternate IP Situations Open source? Academic publications Open innovation

16. Contracted Research Most important special case transfer of ownership only when paid “full economic costs” Meaning of FEC Publication limits Other issues related to working with industry

17. Requirement to Disclose Can’t manage what you don’t know Initial information gathering Gather information relevant to initial valuation Need to balance informationrequired and complexity to complete

18. Use of Disclosures Initiates management Can be used to pass information to: Internal stakeholders (academic management) External stakeholders When is something truly a disclosure?

19. Dispute Resolution Who is an Inventor? Patent attorneys can answer to a point Useful to have some type of internal committee to arbitrate disputes Can also help with revenue splits

20. Protection of Certain Communities Inherent conflicts between supervisors and students How to protect students? Conflict between granting agency and host institutions Use of an intermediate authority Conflicts between inventors and institutions

21. Splitting the Money They say: “It’s not the money, it’s the principle” They mean: “It’s the money!” How to determine? Institutional portion generally at least 50% after ‘costs’ What do costs mean? Include overhead, time etc? or just patents and outside personnel?

22. How to Fund Technology Transfer Does TT get a portion of revenues automatically? What other functions will they be given How to fund over ‘dry spells’?

23. Implementing a Policy Communication plan Also needs to see almost immediate services being available Practices (next section) are a critical piece of the puzzle

24. Practices: The Basic Steps Education of researchers and management The 4 steps: Identify Protect Improve Move out: Licence; Spin-off; Additional sponsored research

25. Educate Management and Employees Ensure basic understanding of trademarks, copyrights, patents, and trade secrets Train scientists/inventors in record keeping, patent application filing process Likely to be first lesson on IP Challenges with researchers doing it wrong Especially patent searching 25

26. Important Related Educational Step Lab Notebooks TTO providing a guide to lab notebooks: http://www.parteqinnovations.com/pdfdoc/ LabNotes_Poster_000.pdf Also makes a good advertisement for office

27. Publish or Perish Academic publication imperative Runs contrary to patent rules Need to patent before publishing Create paradigm: Patent, Publish and Profit

28. The Rewards of Using IP Protection Societal good Will research results get adopted without protection? How to benefit local and international populations? Recognition Career advancement for researchers Money Further research money Personal rewards

29. Important Practices and Policies Who owns and manages resulting IP? IP from research agreements Disclosures Initial valuation Managing commercialization process End-points: Licence; Spin-off; or Additional Research After end-point administration

30. IP Protection Patent – most applicable Copyright Trademark Trade Secret Most likely inapplicable in academic environment

31. Implement Proper IP Protection Patent Protection Conduct cost/benefit analysis Determine Patentability Choose right patent agent/attorney Choose countries to file applications (U.S., PCT applications, Foreign countries) Manage expense-attorney’s fees, government fees Manage patent family Pay maintenance fees

32. Develop Standardized Agreements Protection of Confidentiality Non-disclosure agreements (NDAs) Employment agreements Protection of Technology Licenses Technology transfer agreements Material Transfer Agreements Research Agreements with Industry

33. Staffing: Skills Required SCIENCE IP LAW BUSINESS & INDUSTRY EXPERIENCE

34. Whom Do We Hire? Education: MSc or PhD AND MBA or LLB/JD Training: AUTM or LES course Some additional providers (TTT) Q: Need for regular course in East Africa?

35. Ongoing Training Patent law changes Patent Agents on TTO staff? Improvements in office practice AUTM Annual Meeting is useful LES provides good contacts Regional activity SARIMA COMESA

36. Size and Research Income Direct correlation between TT personnel and research income ~ 2,000 FTE for $50 B  $25 Million Research per TT FTE Compare your own research size 2004 HERD Data for Thailand  $150 M Challenge for smaller countries: How to obtain ‘critical mass’ of TT expertise Solution in S Africa: Central facility

37. The Generations of TTOs 1G: Lots of patent applications Not many licensees Financial hardship 2G: Much more analysis before deciding to file Applications are highly targeted Start-up Company creation attempted 3G: Science portfolios explored with patent back-up Creation of industry-directed research groups Use of IP for ‘public good’

38. Marcel D. Mongeon +1 (905) 481 0133 UK: +44 (0) 1905 70 1818 marcel@mongeonconsulting.com Questions?